patent lawsuit-global cellular v otter products

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

Civil Action No.:

GLOBAL CELLULAR, INC., a Georgia

corporation,

Plaintiff,

vs.

OTTER PRODUCTS, LLC, a Colorado

limited liability company,

Defendant.

Declaratory Judgment

Patent

Copyright

Trademark

Unfair Competition

Tortious Interference

Defamation

COMPLAINT

NATURE OF THE ACTION

Plaintiff Global Cellular, Inc. (“Global”), through its undersigned attorney,

complains of Defendant, Otter Products, LLC (“OtterBox” or “Defendant”), as

follows:

1. This is an action seeking a declaratory judgment that Plaintiff does not

infringe any valid patent, copyright, trademark, other intellectual property rights of

OtterBox and that Plaintiff has not violated any state unfair competition law,

whether statutory or at common law. This action further seeks compensatory and

punitive damages for unfair competition, tortious interference with Plaintiff’s

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business relationships, and defamation, as well as injunctive relief and attorney’s

fees in accordance with the appropriate statutes, as set forth hereinafter.

PARTIES

Plaintiff

2. Global is a corporation organized and existing under the laws of the State of

Georgia, having its principal office at 6485 Shiloh Road, Building B-100,

Alpharetta, GA 30005.

Defendant

3. On information and belief, OtterBox is a limited liability company organized

and existing under the laws of the State of Colorado having a registered office at 1

Old Town Square, Suite 303, Fort Collins, CO 80524.

JURISDICTION AND VENUE

4. This action arises under the federal Patent Act, 35 U.S.C. § 101, et. seq., the

federal Copyright Act, 17 U.S.C. §101, et seq., the federal Trademark (“Lanham”)

Act 15 U.S.C. § 1051, et. seq., and under the federal Declaratory Judgment Act, 28

U.S.C. §§ 2201, 2202.

5. This action is further based upon state law claims relating to tortious

interference.

6. This court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331,

1338(a), and 1338(b) because this action arises under Acts of Congress relating to

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patents, copyrights, and trademarks, and because it contains a claim of unfair

competition joined with a substantial and related claim under the patent, copyright,

and/or trademark laws. Subject matter jurisdiction over this action is conferred

upon this court by 28 U.S.C. §1331, 28 U.S.C. §1338(a), 28 U.S.C. §1338(b), 17

U.S.C. § 1121, and supplemental jurisdiction pursuant to 28 U.S.C. § 1367.

7. This court has further subject matter jurisdiction pursuant to 28 U.S.C. §

1332, because there is diversity of citizenship and the amount in controversy,

exclusive of interest and costs, exceeds $75,000.

8. Venue is properly laid in the Northern District of Georgia pursuant to 28

U.S.C. §§ 1391(a), (b), and 1391(c), in that Defendant committed the acts

complained of herein within this judicial district, and it is subject to personal

jurisdiction within this judicial district.

Statement of Facts

The Infringement Letter

9. Cellairis Franchise, Inc. (“Cellairis”) is the owner of a system (“the System”)

for the operation of Cellairis branded kiosks and other physical facilities

(“Business Units”), which specialize in the sale of wireless/cellular telephone

accessories and other related products (the “Products”) under marks owned and

licensed by Plaintiff through the Business Units.

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10. Plaintiff’s marks, as used on Products, include the “Cellairis” mark, the

“Cellairis.com” mark, the “dragonfly” mark, the “dragon fly” mark, and the

“dragon fly (with logo) mark, all of which are federally registered to Global (“the

Marks”).

11. The various Business Units are operated by franchisees of Cellairis

(“Franchisees”), and the various Business Units purchase Products directly from

Global, which is in the business of supplying Products to the Franchisees who have

been licensed to use the System pursuant to Franchise Agreements entered into

between such Franchisees and Cellairis.

12. In view of the foregoing, Global has had, and continues to have business

relationships with such Franchisees.

13. No Products are manufactured, sold, offered for sale, or imported by

Cellairis, and no Products supplied to Franchisees are sold by Cellairis.

14. On or about May 19, 2009, Karen I. Boyd, Esq. of Turner Boyd LLP,

counsel for OtterBox, wrote and emailed a letter (“the Infringement Letter”), a true

copy of which is attached hereto as Exhibit 1, in which Cellairis was expressly

accused of “… selling a blatant copy of the OtterBox 3G iPhone Defender Series

Case … under the name ‘Ultrabox’” and selling “… knock-off products [in]

knowing and willful infringement of OtterBox’s intellectual property…”

15. In fact, Cellairis does not manufacture, sell, or import any Products.

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16. The Infringement Letter (Exhibit 1) further stated that the “iPhone Defender

Series case is protected under both federal and state statutory and common law.”

17. The Infringement Letter (Exhibit 1) further stated, “OtterBox registered the

iPhone Defender Series case with the United States Copyright office [sic], and it is

the subject of a recently allowed United States design patent and pending utility

patents.”

18. The Infringement Letter (Exhibit 1) also asserted, “Celairis’s [sic] sale of the

‘UltraBox’ copy of the iPhone Defender series case infringes OtterBox’s copyright

in iPhone Defender Series case, and upon issuance of the allowed design patent,

will infringe that as well.”

19. The Infringement Letter (Exhibit 1) further asserted that Cellairis was a

“willful infringer” and it expressly stated, “… Cellairis faces liability under the

criminal infringement statute, 17 U.S.C. § 506.”

20. Notwithstanding the allegations in the Infringement Letter, Cellairis neither

manufactures, sells, offers for sale, nor imports any goods or Products, whereby it

is impossible for Cellairis to have violated any patent, trademark, copyright, trade

secret, or other intellectual property right of OtterBox; nor did the Infringement

Letter specifically give notice of any U.S. Patent, any U.S. Copyright Registration,

and U.S. Trademark Registration, or any other claimed right which allegedly gave

rise to the Infringement Letter.

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21. Accordingly, Cellairis and its Franchisees turned to Plaintiff, the supplier of

Products to Franchisees, regarding the false infringement allegations that OtterBox

had leveled against Cellairis.

22. In view of Global’s business relationship with the Franchisees, Global

reviewed the patents, trademarks, and copyrights known to be assigned to OtterBox

(“OtterBox IP”).

23. Having reviewed the OtterBox IP, and having compared it to the Products

which Global provided to the Franchisees, Global denies that any of the Products

infringe any valid design or utility patent, any copyright, any trademark, any non-

disclosure agreement, or any other intellectual property right of OtterBox, and

Global specifically denies that it willfully infringed any legally cognizable

intellectual property right of OtterBox as set out in the Infringement Letter.

24. Global further denies committing any act in violation of any state unfair

competition law, whether statutory or at common law which may have given rise to

the Infringement Letter.

The Infringement Email

25. On or about October 29, 2010 Eric Land, Distributor Sales Manager for

OtterBox sent an email to Joseph Brown, (“the Infringement Email”), a true copy

of which is attached hereto as Exhibit 2, in which Mr. Land asserted that one of

OtterBox’s “… Account Development Executives was recently in Alabama. He

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came across another Cellairis kiosk selling counterfeit Defender cases.” The

Infringement Email accused Cellairis of manufacturing the allegedly infringing

cases, and it included a photo of an allegedly infringing case (Exhibit 3) as well as

a copy of U.S. Patent No. D617,784 (Exhibit 4).

26. Cellairis expressly denies that it manufactured the case shown in Exhibit 3,

as (wrongly) asserted in the Infringement Email (Exhibit 2).

27. Cellairis further denies that the case shown in Exhibit 3 falls within the

scope of any valid claim of U.S. Patent No. D617,784 (Exhibit 4).

28. The allegation that Cellairis was engaged in “infringing upon” U.S. Patent

No. D617,784 (Exhibit 4) was false and defamatory, and, on information and

belief, it was published to third parties, including, inter alia, Kelly Frazier,

Intellectual Property Manager of OtterBox, and John McKinney, as set forth in the

“Cc:” of the Infringement Email.

29. After sending the Infringement Email on October 29, 2010, Mr. Land sent a

follow-up email to Mr. Joseph Brown on or about November 1, 2010 (Exhibit 5).

30. On or about November 1, 2010, Kelly Frazier, Intellectual Property Manager

of OtterBox, “suspended negotiations” in an additional defamatory email to Mr.

Brown in which Cellairs was, again, (wrongly) accused of selling “knock-offs”,

with copies sent to Eric Land and John McKinney (See, Exhibit 6).

The First District Court Action

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31. As a result of the foregoing improper activities by OtterBox, on or about

January 5, 2011, Global, together with Cellairis (which is not presently a party to

the present action) filed an action in U.S. District Court for the Northern District of

Georgia, namely Global Cellular, Inc. and Cellairis Franchise, Inc. v. Otter

Products, LLC, Case No. 1:11-cv-00037-JEC (“the First District Court Case”).

32. In that OtterBox appeared to have “mended its ways”, the Summons in the

First District Court Case was not served, and the First District Court Case was

allowed to be dismissed.

33. Notwithstanding, the calm which appeared to have prevailed, OtterBox

subsequently brought a Section 337 Investigation before the International Trade

Commission, captioned In re Investigation of Certain Protective Cases and

Components Thereof, ITC Investigation No. 337-780 in which OtterBox named

Cellairis as a respondent (“the ITC Investigation”).

34. In the ITC Investigation, OtterBox alleged that various U.S. Patents (namely

U.S. Patent Nos. 7,933,122; D600,908; D617,784; D615,536; D617,785;

D634,741; D636,386) and various U.S. Trademarks (namely, U.S. Trademark Reg.

Nos. 3,788,535; 3,623,789; and 3,795,187) were being infringed by the various

respondents, including Cellairis.

35. Global is the sole provider of any of the Products complained of, as

aforesaid, or as set out in the ITC Action, whereby the foregoing acts of OtterBox,

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including the commencement and continuance of the ITC Action against Cellairis

have negatively impacted and damaged Global’s relationships with Cellairis and

the Franchisees.

First Cause of Action

Declaratory Judgment of Non-Infringement

36. Global repeats and realleges the allegations of the foregoing paragraphs.

37. A case of actual controversy between Global and OtterBox exists under 28

U.S.C. §§ 2201 and 2202.

38. Notwithstanding the allegations contained in the Infringement Letter

(Exhibit 1) and in the Infringement Email (Exhibit 2), and in the ITC Action,

Global expressly denies that it has infringed any valid claim of any U.S. Design

Patent owned by OtterBox, including, but not limited to, U.S. Patent Nos.

D600,908; D617,784; D615,536; D617,785; D634,741; D636,386.

39. Global expressly denies that it has infringed any valid claim of any U.S.

utility patent owned by OtterBox including, but not limited to, U.S. Patent Nos.

7,933,122.

40. Global expressly denies that it has infringed any U.S. Trademark registered

to OtterBox, including, but not limited to U.S. Trademark Reg. Nos. 3,788,535;

3,623,789; and 3,795,187.

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41. Global expressly denies that it has infringed any valid copyright owned by

OtterBox.

42. Global expressly denies that it has violated any trade secret owned by

OtterBox.

43. Global expressly denies that it has infringed any legally cognizable

intellectual right of OtterBox.

44. A declaratory judgment will serve a useful purpose in clarifying and settling

legal relations at issue between the parties, and it will terminate and afford relief to

Plaintiffs from the uncertainty, insecurity, and controversy giving rise to this

proceeding.

45. A case of actual controversy between Plaintiffs and OtterBox exists under 28

U.S.C. §§ 2201 and 2202.

Second Cause of Action

Declaratory Judgment Non-Infringement of U.S. Patent No. D617,784


47. U.S. Patent No. D617,784 (Exhibit 4) appears to depict a case for a cellular

telephone.

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48. The “DESCRIPTION” portion of U.S. Patent No. D617,784, expressly

states, “The broken line portions of the disclosure are for illustrative purposes only

and form no part of the claimed design.”

49. In view of the disclaimer expressed in the “DESCRIPTION” to five

“bumps” as shown in FIGS. 4-6.

50. As shown in Mr. Land’s own photograph of the allegedly infringing case

manufactured, sold, offered for sale, and/or imported by Global (Exhibit 3), no

such “bumps” are present in that case.

51. In view of the foregoing, Global expressly denies that the case shown in

Exhibit 3 infringes U.S. Patent No. D617,784 as wrongly asserted by OtterBox.

52. A declaratory judgment will serve a useful purpose in clarifying and settling

legal relations at issue between the parties, and it will terminate and afford relief to

Plaintiffs from the uncertainty, insecurity, and controversy giving rise to this

proceeding.

53. A case of actual controversy between Plaintiffs and OtterBox exists under 28

U.S.C. §§ 2201 and 2202.

Third Cause of Action

Unfair Competition Relations


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55. The foregoing acts by OtterBox constitute unfair competition.

Fourth Cause of Action

Tortious Interference with Global’s Business Relations


57. By making the foregoing frivolous claims to Global’s customers, namely, the

Franchisees, OtterBox has damaged Global’s reputation with such Franchisees and

with Cellairis, all without any basis.

Fifth Cause of Action

Defamation


59. By repeatedly, publicly claiming and publishing statements wrongly

accusing the Products of Global as infringing, OtterBox has defamed Global, with

those who have relied upon Global’s impeccable reputation as providing high

quality infringement free Products, including both the Franchisees and Cellairis, all

without any basis.

PRAYER FOR RELIEF

WHEREFORE, Global respectfully requests declaratory relief against OtterBox

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that:

A. Global has not infringed any valid patent, copyright, trademark, or other

intellectual property right of OtterBox.

B. Global has not violated any state unfair competition laws, whether statutory

or at common law.

C. This action should be considered to be an “exceptional case”, and the court

should award the costs of this action and Global’s reasonable attorney’s fees

against OtterBox, in accordance with 35 U.S.C. § 285, 17 U.S.C. § 505, or 15

U.S.C. § 1117.

D. OtterBox should be permanently enjoined from making, disseminating, or

publishing any frivolous accusations as to Global having “infringed” any patent,

copyright, trademark, or other rights of OtterBox.

E. Global should be awarded compensatory and punitive damages, as well as

injunctive relief, for based upon unfair competition.

F. Global should be awarded compensatory and punitive damages for tortious

interference with Global’s business relations.

G. Global should be awarded compensatory and punitive damages for

defamation.

H. Global should be awarded such other and further relief as this honorable

court may deem equitable and proper.

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A JURY TRIAL IS DEMANDED.

Undersigned certifies compliance with LR 5.1C (Times New Roman, 14 point).

Respectfully submitted,

Dated: __July 11, 2011__ By:_s/ Sanford J. Asman________________ Law Office of Sanford J. Asman 570 Vinington Court Atlanta, Georgia 30350 Phone : (770) 391-0215 Fax : (770) 668-9144 Email : [email protected]

Sanford J. Asman Georgia Bar No. 026118 Attorney for Plaintiff Global Cellular, Inc.

patent lawsuit-global cellular v otter products

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